What rights does the Intellectual Property owner have?
The object of IP is to protect a work that has only an abstract existence and therefore cannot be perceived by the senses, unlike a building or a car. However, like material goods, intellectual creations may be subject to a property right.
It is necessary to distinguish between two concepts when speaking about IP.
Moral right This grants the author paternity of the intellectual creation and protects the personal and reputational value of a work, as opposed to its purely monetary value. Moral right is especially important under copyright law since the author has the right to decide whether they want to disclose the work to the public. They can set the conditions of its commercial exploitation and defend its integrity. As the author is deemed to have the moral right to control their creation, moral right relates to the connection between an author and their creation.
Economic right This relates to a creation’s commercial value and grants the author a monopoly to exclusively exploit their creation for a certain period. This fosters industrial and commercial relations as well as creativity. Under this monopoly, right holders can prevent third parties from using, manufacturing and selling the creation without authorisation. If rights are infringed the author can take legal action against unlawful use of their literary, artistic or industrial creations.
What is a trademark?
WIPO defines a trademark as a distinctive sign, a symbol that distinguishes the trademark owner’s goods and services from those of competitors. The use of signs to distinguish merchants’ products first became significant with the development of trade, and is now considered a key tool for both businesses and consumers.
It is often said that nowadays a trademark is one of the most valuable assets, if not the most valuable, of an organisation. For consumers a trademark reflects the image of the company and therefore has commercial value.
From the date a trademark is registered with the competent authority, generally the Patent and Trademark Office, the holder has exclusive rights of exploitation. A trademark can be registered for 7 to 20 years and protection can be renewed indefinitely. During this time the owner can use, sell, license or merchandise the trademark, and of course prevent its unauthorised use. As the trademark represents the values of the company it represents, the owner should ensure that no other organisation attempts to be illegally associated with these values by incorrect use of the protected trademark.
In order to maintain their rights, the owner of the trademark must make proper use of the trademark and pay annual fees. If the mark is not exploited for five consecutive years trademark protection is lost.
Why should I do a trademark search?
Conducting a complete search of your mark before filing an application is very important because the results may identify potential problems, such as a likelihood of confusion with a prior registered mark or a mark in a pending application. A search could save you the expense of applying for a mark in which you will likely not receive a registration because another party may already have stronger rights in that mark. Also, the search results may show whether your mark or a part of your mark appears as generic or descriptive wording in other registrations, and thus is weak and/ or difficult to protect.
Do trademarks, copyrights, and patents protect the same things?
No. Trademarks, copyrights, and patents protect different types of intellectual property. A trademark typically protects brand names and logos used on goods and services. A copyright protects an original artistic or literary work. A patent protects an invention. For example, if you invent a new kind of vacuum cleaner, you would apply for a patent to protect the invention itself. You would apply to register a trademark to protect the brand name of the vacuum cleaner. And you might register a copyright for the TV commercial that you use to market the product.
Are the words in my logo protected?
Registration of a trade mark gives rights to the mark as a whole. It does not give rights to any separate parts of the mark such as words or design elements independently. Before applying for a trade mark consider the following:
- A word mark for plain text characters protects the words regardless of the way they are presented.
- A device mark for words protected in special characters or a logo mark provides protection for the mark as it is presented
Can two words that sound the same, but are spelt different, infringe on each other.?
Trademarks, by definition, are registered to denote that products bearing the mark come from a single source within a specific industry. Infringement can occur where there is actual confusion as to the source of the goods or, as is more often the case, where there is a likelihood that confusion will occur. Likelihood of confusion means that there is a good chance someone will not know the source of the goods or think of the source is someone other than the owner of the mark. If the marks are the phonetic equivalent of each other and in the same industry, then there is a strong likelihood that confusion will occur.
If a company has a registered trademark, can another company, which does not do business or have any product with the same name, register a domain name with that name?
Without reviewing specifics it is difficult to answer this question. A trademark is registered to cover specific products and or services. Some marks are very famous and as such their protection extends beyond the wares or services as registered. Pepsi is a good example. The word is a mark covering beverages. However, if you were to attempt to use the mark for shoes the public would think they came from Pepsi. You have a conflict in this instance.
On the other hand, not all marks are famous. The degree to which a mark is well known is always subject to interpretation. Therefore, in answer to your specific question, yes you can register a domain name for one set of products that is not in direct competition with a registered mark for other products..
Unfortunately there is a catch. If the owner of the mark can prove his mark is famous you might lose your domain name on the grounds you knowingly used a famous trademark.
What guarantee is there that an application won't be rejected?
There is no guarantee an application will be successful. The two primary reasons for rejection of an application are distinctiveness or confusion with other marks.
However, once we deem your mark register-able, it is unlikely to be rejected as we at Royal Brand Corporation (RBC) can argue in favour of registration